IPC Policy Finalised on 220422

6.2.8.2 receiver to not expose or uses that information. This responsibility appears without
6.2.8.3 any concern whether the exposure is done according to the non-exposed agreement
6.3 or secret agreement.
6.3.1 UNITEN adheres to the principles that trade secret must be protected. In order to
maintain protection while a trade secret is in use, it is the Policy of UNITEN to bind
6.3.1.1 individuals having access to the secret or know-how by a non-disclosure agreement
or a contractual agreement.
The above confidentiality obligations shall not apply in any of the following
circumstances:
I. where disclosure is required by law or any government agency;
II. where the information is in the public domain or becomes generally available to

the public; and
III. where disclosure is made with the prior consent of UNITEN.

Ownership of IPR
The ownership rights of the intellectual property rights are as follows:
University Staff
Unless it is agreed in writing or stated otherwise in this Policy, the University claims
worldwide right, ownership and interest to or in all IPR for literacy works, inventions,
designs and others.

(a) That are created by the University Staff,
i. in their work direction and the result of being appointed by the
University, or
ii. under the request or order of the University, or
iii. subject to Clause 6, following the agreement with the third party where
the University is one of the parties;
iv. That are created, developed, produced or made by the University Staff
by using or by the help of facilities, materials, financial or other sources
that are provided or received by or through the University; or

(b) That is commissioned by or for the University for any purpose.
The University claim any right, ownership or interest for or in the IPR for scholarly
books, articles, conference papers, creative works, texts, proceedings, audio visual,

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6.3.1.2 lectures or other academic works or those that are produced (in writings or other
6.3.1.3 forms) or literacy, musical, or drama works, performances or other creative works
6.3.1.4 that are composed or created by the University Staff for the works assigned by the
University. However, the University keeps the non-exclusive permanent license,
royalty free to use, develop or produce in any suitable forms, for that work or
contents of the work produced by the University Staff for teaching purposes and
this license is permanent after the University Staff has ended its service at the
University.
In the case of scholarly materials, the University waives its IP rights by contractual
agreement (that is, the standard contract of employment for academic employees),
unless:

a. the employee has generated the scholarly materials at the express
request of the University and has used earmarked University funding,
including paid sabbatical leave; and/or

b. the nature of the employee’s job means that they are predominantly
paid to produce such material;

c. the material has been judged likely to harm the University’s reputation,
in the opinion of Vice Chancellor;

d. the material could be used to economic advantage by a competitor, in
the opinion of a Vice Chancellor;

e. there is substantial use of the University’s name.
The University claims all the worldwide rights, ownerships and interest to or in all
IPR for commissioned courses materials (lecture notes, radio airings, audio visuals
and digitally encoded materials and others) that are developed to further the
teaching function and provide specific benefit to the University Staff. These
commissions that are based on contract can be financial benefit or release from
teaching duty. If the inventors or the courses materials are moved to another
institutions, by the University’s discretion, a non-exclusive license can be given to
the inventors to use the courses materials only for teaching purposes and not to
implement any course as a competition to the course in the University.
The University does not claim any right, ownership or interest in any IPR on literary
works, inventions, designs or other products by the University Staff that are out of

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6.3.1.5 their work scope and those that were created, developed, produced or in other
words those that are created without any use or help in facilities, materials, financial
6.3.1.6 or other sources, including pre-creation Intellectual Property that was owned by the
6.3.1.7 University, supplied or acquired by the University. The University Staff can, if
desired, give or transfer the right, ownership or interest toward or in the Intellectual
6.3.2 Property to the University, subject to the agreed regulations and methods.
6.3.2.1 Although there are some contradictory regulations in this Policy, all contracts and
rules that appear during the acceptance of this Policy between the University and
6.3.2.2 the Government, other bodies and outside organizations, and those that are
connected with the IPR where the University has some interest will still be fully
enforced, including where the ownership of the IPR is given to the third party.
UNITEN reserves its right to transfer the ownership of Intellectual Property claimed
under the above provisions to third parties for commercialization purposes.
Employees who terminate their employment with the University carry forward only
the IP rights that they owned prior to their employment with the University subject
to any agreements to the contrary. Where the University owns the IP rights over
any unpublished material it should be assigned to University’s knowledge archive
when the employee leaves, if this has not already been done.

Student
Unless agreed in writing or stated otherwise in this Policy, the University does not
claim any right, ownership or interest to or in any Intellectual Property produced by
the Student during their study course or research in the University. However, under
certain circumstances, the University can request the Student involved to make an
agreement to allow the University to have the right to the created, designed or
developed Intellectual Property during their research or study course.
The University claims the worldwide right, ownership, interest over or in any IP that
is produced or created by the Student where;

I. The creation of the Intellectual Property needs the use and help from the
University Staff, facilities, materials, financial or other sources that are
provided or acquired by or through the University;

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6.3.2.3 II. The creation of the Intellectual Property comes from the use of
previously available Intellectual Property owned by the University;
6.3.2.4
III. That Intellectual Property is a set of Intellectual Property that is
6.3.2.5 produced by a group where the Student is a member; or
6.3.3
6.3.3.1 IV. The Intellectual Property is produced during or as a result of his/her
6.3.3.2 appointment with the University.

Where the University owns the Intellectual Property created by the Student, the
University will ensure that the ownership does not interfere with the assessment of
the academic achievement or the financial allocation or the Student award. The
University keeps the right to block or set the rules to the exposure, distribution, or
other matters involving any work that contains the Intellectual Property for a period
of time for the protection of the Intellectual Property.
Where the University owns the Intellectual Property created by the Student, the
University will ensure that the ownership does not interfere with the assessment of
the academic achievement or the financial allocation or the Student award. The
University keeps the right to block or set the rules to the exposure, distribution, or
other matters involving any work that contains the Intellectual Property for a period
of time for the protection of the Intellectual Property.
Regardless of ownership of the IP, UNITEN shall have access to all data generated
using UNITEN’s resources and will retain the original raw data when the Staff,
Student or Visitor leaves.

Visitor
Unless agreed in writing or stated otherwise in this Policy, the University does not
claim any right, ownership or the interest to or in any Intellectual Property that is
produced by the Visitors of the University.
However, where Intellectual Property is produced, created or developed using
facilities, materials, financial or other sources that are provided or acquired by or
through the University, the Visitor has to state any Intellectual Property that they
created and the

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6.3.3.3 University can claim the ownership right or other rights for that Intellectual
6.3.3.4 Property. In the execution of this right under this paragraph, the University can be
6.4 guided, though not necessarily bound, to the regulations in this Policy.
6.4.1 Regardless of ownership of the IP, UNITEN shall have access to all data generated
using UNITEN resources and will retain the original raw data when the Staff, Student
6.4.2 or Visitor leaves.

6.4.3 Disclosure
Individuals subject to this Policy are required to promptly disclose to the IPC,
through their HOD, all inventions, copyrightable work, and tangible research
property in which the University has an ownership interest under the provisions of
this Policy or for which disclosure is required by contract or law. Prompt disclosure
is especially important for inventions conceived and/or made with external funding
so that the University may meet its legal obligations under such funding
agreements.
Individuals covered by this Policy are encouraged to disclose as soon as possible
after the conception of the invention or seek guidance from URND as soon as
questions arise as to what is patentable and what must be disclosed to the
University. Disclosure shall be made in a form prescribed by and available from
URND, shall include a full and complete description of the discovery or development
and shall identify all contributing participants within six (6) months. Upon receipt of
a completed disclosure form, the URND together with IPCC will conduct a review of
the disclosure to determine the rights and obligations of all parties concerned and
the commercial significance of the discovery and will evaluate patentability issues.
Similarly, if Staff, Students or Visitors receive confidential or proprietary information
from a third party under a confidentiality agreement, they have a duty not to
disclose such information and to take necessary precautions to protect the
confidentiality of such information. Students should be cautioned not to base their
theses or dissertations on third-party confidential information, whether furnished
by a third party or resulting from sponsored research.

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6.4.4 Students are required to get consent from their supervisors before disclosing their
6.4.5 theses or dissertations to any third party prior to filing an intellectual property
protection.
6.5 In the course of their research activities, members of the UNITEN community may
6.5.1 develop confidential information, including inventions and discoveries related to
processes, machines, manufacturing and compositions of matter. This confidential
6.5.2 information, referred to as trade secrets in the industrial world, may have significant
6.5.3 commercial value. UNITEN, however, cannot maintain the commercial value of its
confidential information without the assistance and cooperation of Staff, Students
and Visitors. Accordingly, before Staff, Students or Visitors disclose UNITEN’s
confidential or proprietary information to a third party, they should comply with the
restrictions of any sponsored agreements and, at minimum, have that third party
execute a non-disclosure agreement. Please contact URND if you require a non-
disclosure agreement.

Intellectual Property produced under Agreements with Third Party
Intellectual Property that is conceived or developed in the course of or resulting
from research supported by a grant or contract with the government (or an agency
thereof) or a non-profit or for-profit non-governmental entity or by a private gift or
grant to the University or its staff members, shall be determined in accordance with
the terms of the sponsored grant or contract or in the absence of such terms and to
the extent consistent with applicable law, shall be owned by the University.
University staff cannot, whether directly or indirectly, provide the third party who
is not an employee of the University, any facility, material or University source with
the intention of creating Intellectual Property unless with a written approval from
the Vice Chancellor.
In all cases where the IP is to be jointly owned, the parties shall ensure that any
rights to commercialise the IP and share in the profits is pre-determined by written
contract among themselves. Where originators of IP take steps or seek to negotiate
with a third party for the commercial exploitation of IP, the matter must be notified
and permission must be sought from URND.

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6.5.4 In the event that a third party creates or develops new Intellectual Property using
the results, outcome, data or information derived from or resulting out of the initial
6.5.5 arrangement with UNITEN in which the third party would not normally obtain
6.6 without such arrangement with UNITEN, the third party shall be obliged to inform
URND in writing of such circumstance. UNITEN shall then have the first right of
6.7 refusal to assert or claim rights to the said Intellectual Property.
6.8 Regardless of ownership of the IP, UNITEN shall have access to all data generated
6.8.1 using UNITEN resources and will retain the original raw data when the Staff, Student
or Visitor leaves.

Intellectual Property Arising from Consulting Activities
The University encourages UNITEN staff in external consulting as an effective
mechanism for professional development and for establishing good relationships
with industry. Before entering into a consulting agreement, special attention should
be given to the terms of any agreement to ensure that the assignment of rights to
Intellectual Property resulting from the consulting activities does not conflict with
this Policy.

Multiple Inventors
In the event of multiple inventors, the inventors will agree between or among
themselves as to the ownership rights and benefits accruing to the Inventors
consistent with the terms of this policy.

Organisation
It spells out the governing body that sets the direction of the university’s intellectual
property and oversees the implementation of this policy.
Intellectual Property & Commercialisation Committee (IPCC)
The Intellectual Property Commercialisation Committee (IPCC) serves as an advisory
committee to the Vice Chancellor on all University intellectual property rights and
IP commercialisation related matters. The Intellectual Property Committee (IPCC)
shall be chaired by the Deputy Vice Chancellor (Academic) and have the following
composition:

I. Deputy Vice Chancellor (Academic & Research) – Chairman
II. Managing Director, UNITEN R & D Sdn Bhd (URND)

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6.8.2 III. Chief Commercialisation Officer, UNITEN R & D Sdn Bhd (URND)
IV. Director, Innovation & Research Management Centre (iRMC)
6.8.3 V. Chief Financial Officer, Finance Department (UNITEN)
6.8.4 VI. Legal Manager, (UNITEN)
VII. One representative from Strategic Planning Centre (SPC)
VIII. One (1) representative from all colleges
UNITEN Intellectual Property Evaluation Committee (IPEC)
UNITEN Intellectual Property Evaluation Committee serves as the intellectual
property assessment committee. The IPEC will be under the management of URND
and consists of the following composition:

I. Chairman, URND Managing Director
II. URND Chief Commercialisation Officer
III. URND IP Manager
IV. Director, Research Management Centre (iRMC)
V. One (1) representative from all colleges

Appointment of IPEC and IPCC
The Vice Chancellor shall make all appointments of members of the IPCC and IPEC
for a two-year (2) term. Staggered terms to assure continuity are desirable. All
members may be re-appointed.
Responsibilities of IPCC
The IPCC shall have the following responsibilities: -
1. Evaluation of technical merit, economic potential and protection of Intellectual

Property.
2. Review or development of policy recommendations pertaining to Intellectual

Property.
3. Determination of the ownership of Intellectual Property.
4. Recommendations to JPU regarding the commercialization of Intellectual

Property including sale, assignment or termination of Intellectual Property to
the third party.
5. Recommendation to JPU on the form of incentives and recognitions for staffs’
creation and innovation.

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7 6. Review of licensing policies and agreements.
Promulgation of guidelines and procedures as may be necessary for the
7.1 implementation of this Policy.
7.1.1
Protection of Intellectual Property
The University will not generally seek protection for innovations that the IPEC
determines are not commercially attractive, even if the Intellectual Property has
intellectual merit, unless required by the sponsor or University, in which case the
sponsor or the University shall pay all related costs associated with protecting the
intellectual property. Costs associated with the protection of the Intellectual
Property will be recovered for the funding party before royalties, license fees or sale
proceeds are distributed.
Inventor may apply for the University’s support for the exploitation and
commercialisation of the idea. Applications are made on an Inventions Disclosure
Form (see UNITEN Intellectual Property Management & Commercialisation
Handbook Appendix 1) which will be submitted to IP & Commercialisation unit of
URND. The idea then comes under the definition of Disclosed IP.
Provision of Copyright
Copyright protection for books, articles, computer software, websites, musical
compositions, artworks, sculptures, films, photographs, videos and other
copyrightable works is important to UNITEN to recognise authorship of the work
and to guarantee that UNITEN may license the material for publication, duplication,
display and distribution. In order to recognise and protect the integrity of the work,
UNITEN requires a notice of copyright to be affixed to UNITEN-owned copyrighted
materials in the following form: “Copyright [year] or © [year] Universiti Tenaga
Nasional. All rights reserved”. The date in the notice should be the year in which the
work is first published. UNITEN may also elect to register certain copyrighted works
with the Malaysian Intellectual Property Office in order to avail itself to certain
statutory protections under the copyright laws. Questions concerning copyright
protection and registration should be directed to TTO. Requests for reprints of
UNITEN copyrighted works should be directed to the faculty, department or unit
that developed the copyrightable work.

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7.1.2 This Policy applies to any software, databases and any other copyright materials
created by Staff in the course of their normal duties. Computer software may be
7.1.3 subject to patent or copyright protection. Where the Staff, Student(s), Visitor(s)
7.1.4 generate or create any software using open source materials, there may be an
7.1.5 obligation to make any improvements to the open source material publicly available
and restrictions on commercialising any IP which is generated using open source
materials may arise. In such circumstances, Staff should seek TTO’s advice before
using any open source materials in any research projects which are funded by grant
or commissioned by third party. If the software is owned by UNITEN and the
inventor/author wishes to make it publicly available for non-commercial use, the
developer should, at minimum, include the following notice on the first screen prior
to distributing software.
“Copyright [year] or © [year] Universiti Tenaga Nasional. All rights reserved.”
“This software is experimental in nature and is provided on an AS-IS basis only.
UNITEN SPECIFICALLY DISCLAIMS ALL WARRANTIES, EXPRESS AND IMPLIED,
INCLUDING WITHOUT LIMITATION ANY WARRANTY AS TO MERCHANTIBILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
This software may be reproduced and used for non-commercial purposes only, so
long as this copyright notice is reproduced with each such copy made”.
Staff, Students and Visitors should contact UNITEN for an appropriate form of
license agreement and related procedures before distributing UNITEN-owned
computer software and to confirm that public distribution does not violate the
terms of a sponsored agreement of applicable law.
Upon evaluation by URND and IPEC and where agreed by UNITEN, UNITEN will
invest in the patent costs related to the protection of an invention. These costs will
be paid by UNITEN until either UNITEN decides to abandon the patent application
or a licensee agrees to pay such patent costs or sale of the patent.
Research material that are created, discovered or developed in the course of
UNITEN research frequently may be patented or copyrighted and licensed for
commercial purposes. Such Tangible Research Property may also be distributed
and exchanged for research or other educational purposes. Tangible Research
Property and other data may have economic value. TTO will provide assistance to

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7.2 ensure that such property and data is properly protected before it is licensed or
7.2.1 distributed.
7.2.2 Provisions of Service Marks
Service marks and trademarks are among the university’s foremost assets and must
7.2.3 be treated as such to maintain their viability. The UNITEN name and related marks
and graphical features are internationally recognised as symbols of the excellence
7.3 achieved by members of UNITEN community in a wide range of endeavour.
7.3.1 Service marks are designations of sources of origin for services such as educational
7.3.2 services, entertainment services, financial services, and healthcare services.
7.3.3 Trademarks are designations of sources of origin for products such as software,
hardware, clothing and gift items, and are created by use of a mark on labels, tags,
containers and packaging for the products or use of a mark directly on the products.
Non-descriptive words, names, symbols, phrases, sounds and distinctive colours
may be protected as trademarks or service marks.
In order to protect a trademark or service mark, it is important that the designation
“TM” is used after the trademark or “SM” is used after a service mark until such time
as it is registered with the Malaysian Intellectual Property Office to give third parties
adequate notice of ownership. The designation of “R” inside a circle (“®”) must be
placed to the right of the mark after it is registered with the Malaysian Intellectual
Property Office, in order to preserve the trademark owner’s right.
Patentable Inventions
The following outlines the basic steps required to be taken by a supervisor to
withhold a Student's thesis, dissertation or term paper that contains information on
a patentable invention from publication:
The Student's supervisor shall inform the Head of the Department concerned in
writing by submitting "Invention Disclosure Form" as in IPEC Guideline document.
The Head of the Department shall thereafter inform URND and the Dean of
Postgraduate Studies of such invention.
The Head of Department will ensure that the examiners of the thesis, dissertation
or term paper enter into a Non-Disclosure Agreement with UNITEN. The thesis,

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7.3.4 dissertation or term paper shall be withheld from being placed and catalogued in
7.3.5 the library.
7.4 Should IPEC decide to proceed with patent and/ or industrial protection and pursue
commercialisation, the thesis, dissertation or term paper will be withheld until such
8 time the patent application is filed. Once URND informs the Head of Department
8.1 that a patent has been filed, the Head of Department shall inform the Dean of
8.2 Postgraduate Studies that it can proceed to release the thesis in accordance with
the UNITEN's normal procedures.
However, in the event that IPEC decides not to pursue patenting protection and
commercialisation, URND shall inform the Head of Department of such decision. The
Head of Department shall then inform the Dean of Postgraduate Studies to release
the thesis, dissertation or term paper in accordance with UNITEN's normal
procedures.
Plagiarism
If someone has plagiarised a copyright work, the originator is advised to write to the
plagiariser citing any evidence such as an audit trail of notes from when the relevant
copyright work was first created and to await their reaction and see if the copying
stops. If the relevant copyright work has been commercialised or if the plagiarist
does not stop, the originator may wish to take legal action if the relevant copyright
work is potentially commercialisable IP and may attract significant rewards. It will
help if there is significant evidence of the origin and creation of the relevant
copyright work and it may be possible for employees and students to claim damages
which can be quite high in cases of flagrant copying. And this may also spoil the
plagiarist’s reputation.

Incentives for Inventions
UNITEN, in recognition of creative idea generation and innovative research, may
provide incentive schemes for Inventor(s) which shall be determine from time to
time.
UNITEN IP incentive scheme which covers patent filing and granted patent are as
below:

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No. Payment Incentive (RM)

1 Upon patent filing of with Malaysia Patent Office 1500
2 Upon grant of patent from Malaysian Patent Office 3000

8.3 In a circumstance where there are one or more Inventors, the incentives will be
distributed in accordance to the express written agreement of the Inventors or
based on the Inventors named in the Invention disclosure form.

8.4 Paragraphs 8.1 and 8.2 shall apply, mutatis-mutandis, to all newly created patents.

9 Commercialisation
9.1 UNITEN welcomes agreements with third parties for the development, use,

dissemination and commercialisation of Intellectual Property consistent with the
University's mission and the spirit of this Policy. Any agreement to license or transfer
ownership of UNITEN's Intellectual Property by means of sale, assignment or
exchange shall be subject to this Policy and shall include the terms necessary to fulfil
the requirements of this Policy. Agreements relating to the development and/or
commercialization of Intellectual Property may provide that the contracting entity
bear the costs of obtaining protection for Intellectual Property.
9.2 UNITEN recognises and appoints URND on behalf of the University to approach,
negotiate, and enter into any bidding of Intellectual Property agreement with any
third party on such terms and conditions as it deems fit. URND shall be entitled to
assign rights or grant licenses, whether exclusive or not, with respect to the
Intellectual Property for such periods as it shall deem fit, or make such other
arrangements relating to such intellectual property as it may deem appropriate in
order to facilitate technology transfer while protecting the rights of UNITEN and the
lnventor(s).
9.3 UNITEN through URND may use any means whatsoever, as it shall in its sole and
absolute discretion deem fit, to protect any Intellectual Property owned by it,
including, but not limited to, instituting proceedings concerning Intellectual
Property infringements.

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9.4 The Inventor(s) shall provide all information and render all assistance to UNITEN in
all phases of the patent application and/or commercialisation of the Intellectual
Property as UNITEN may time to time require, including but not limited to,
assessment of the Intellectual Property, making amendments to the specification
and claims of the patent applications, and any proceedings concerning Intellectual
Property infringements.

9.5 Where an originator creates IP, he/she shall notify URND in writing before
publishing the finding or invention in the form of article, research paper or any other
form, which may jeopardise the patent application.

9.6 URND shall determine the party in whom the IP should vest in accordance with this
Policy.

9.7 In the event that the inventor(s) of the intellectual property take steps or seek to
finalise with a third party for the commercial collaboration and exploitation of the
intellectual property, the matter must be notified in writing to the IPCC. Failing to
do this, the IPCC is empowered to use the discretionary power to render the
contract derived from such negotiation null and void.

9.8 In the event the IPCC decides to commercialise the Intellectual Property, the
Inventor(s) shall provide all reasonable assistance in furtherance of this goal, for
example, by providing information promptly on request, attending meetings with
potential licensee(s) and providing technical advice regarding further development.

9.9 The university reserves the rights to commercialise the Intellectual Property and
shall undertake appropriate action to be taken with the advice of URND. This may
include, but not limited to, one or more of the following:
I. Undertake the appropriate measures to protect the IP
II. Obtaining an independent valuation of the IP
III. The identification of potential licenses
IV. The assignment of rights to a third party
V. The formation of a spin-off company to exploit the technology (subject to
separate negotiation)

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10 Licensing
10.1 Licensing can be in the form of exclusive license, non-exclusive license, sole license

or cross license. All licensing arrangements can be contractually limited by,
geographical locations, time, industry and fields of application.
I. Exclusive License – UNITEN transfers all rights of exploitation of the IP to the

Licensee. This means UNITEN relinquishes the rights to exploit the IP or to
grant any additional subsequent License(s) to another party. UNITEN should
retain the rights to use, conduct further research and development and exploit
the IP for non-commercial use.
II. Non-Exclusive License – UNITEN may grant the rights of exploitation of the IP
to one or more party(s) including the right to exploit the IP themselves.
III. Sole License – UNITEN transfers all rights of exploitation of the IP to the
Licensee but retains its rights to exploit the IP themselves.
IV. Cross-License – This option allows two or more IP owners to contractually
authorize each other to use their IP for commercial and non-commercial
purposes. In a cross-licensing arrangement, the consideration for the rights
conferred by one party is a reciprocal grant of rights by the other. Cross-
Licensing terms may include the payment of a licensee fee or royalty if the
rights conveyed by the parties are not equal in value.
10.2 Any other legal means, which UNITEN and URND deems fit and appropriate.
10.3 Assignment
UNITEN transfers complete ownership to another party (assignee). Assignment
involves an outright sale of IP rights to the Assignee. However, partial assignments
are allowed. For example, an Assignment may be restricted by geographical
locations.

11 Spin-off Company
11.1 UNITEN via URND forms a company for purposes of Commercialisation of the IP,

where UNITEN may own equity in the company together with any third party, in
proportions to be negotiated based on case by case basis. Initial shareholdings
may vary where third party rights or joint IP owner’s rights needs to be considered.

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11.2 Where UNITEN through URND supports the creation of spin-off ventures, the equity
shall be owned 100 percent by UNITEN via URND.

11.3 For all spin-off ventures, UNITEN and URND shall be responsible in the formation,
administration and monitoring of the spin-off and shareholders of the spin-off
company shall execute shareholders agreement and any other agreements deemed
necessary to determine and outline the rights and obligations of each shareholder
and the commercialisation of the Invention with UNITEN in accordance to the advice
of URND and IPCC.

11.4 If URND and IPCC makes a recommendation that the Intellectual Property is feasible
for commercialisation, a full proposal within the policy and guidelines stipulated
herein must be tabled to the UNITEN Board of Directors for approval.

11.5 Any exploitation of UNITEN’s IP by the spin-off company will only be effective
through a Licensing Agreement between UNITEN and spin-off company.

11.6 The equity holding in the spin-off company shall be determined by UNITEN, based
on the following factors: -
I. Value of IP;
II. Inventor’s duration of employment with UNITEN;
III. Potential business that may be generated by the IP
IV. Involvement level in the creation of the IP
V. Commercial risks to UNITEN
VI. any impact upon the University's reputation and standing

11.7 UNITEN shall hold hundred percent of the equity and Inventors may hold equity in
the spin-off company in their personal capacity, subject to written consent being
first obtained from UNITEN and URND.

11.8 In cases where the Inventor becomes a director of the spin-off company, the Staff
will require permission of their immediate superior and UNITEN to become a
director in the spin-off venture. Staff who takes up roles as directors of spin-off
companies should note that directors have legal fiduciary duties to act in the best
interests of the spin-off company.

11.9 URND may recruit a management team or identify an entrepreneur to work with
the Inventor to ensure that the spinout company takes the venture forward in a
commercially viable direction subject to the consent and approval of UNITEN.

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11.10 Staff or students may have financial interest or other personal interest in a spinout
11.11 or in an organisation to which the University has licenses or is seeking to license
11.12 University IP or may have a personal IP with which they are intending to create a
start-up company. In such cases, they should normally play no executive role in any
11.13 decisions made between the University or its subsidiaries and such spin-offs or IP
licenses. If it is believed that there are exceptional circumstances to argue for such
involvement, prior permission must be sought by the staff or student from the
Deputy Vice Chancellor Academic & Research (DVC A&R).
If they wish to undertake a consultancy for that spin-off, they must seek prior
permission from the Research Director and in turn from the Deputy Vice Chancellor
(Academic & Research). The proposed conflict of interest plan/approach to be to
the Research Director and DVC (Academic & Research) must aim to protect the
reputation of academic(s), their research, and the University and ensure compliance
with company law.
The exit strategy for a spin-off company may be through one of the following
manners:
a. Merger (merging with another company whereby shares in the company are

exchanged for shares in the other company);
b. Trade sale (outright sale of business whereby all assets are converted into cash

when the company winds up and profit returned to shareholders. In a situation
where all shares are sold to one single buyer, shareholders will receive
proceeds of sales of the shares);
c. Redemption of shares (shares are redeemed by the company whereby shares
are returned/cancelled and the company pays agreed purchase price);
d. Initial public offering (IPO results in raising capital from the public therefore
listing with a stock exchange which provides a liquid and accessible market for
a Venture Capital/Investor to sell its shares for profit); or
e. Winding up (the company shall be subjected to winding-up rules and
procedures, in the event the company needs to be wound up)
If exit through any of these manners becomes likely, UNITEN and URND must be
kept informed and be allowed to participate fully.

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12 Joint Venture
UNITEN joint-ventures with a third party for purposes of commercialisation of the
IP, wherein a new company may be formed for such purpose with the advice from
UNITEN IPCC and URND.

13 Income Distribution

13.1 When UNITEN receives any income from the commercialisation or exploitation of IP

and unless agreed upon otherwise, this income whether in the form of direct total

or in instalment will be distributed in the manner prescribed as per clause 13.2.

13.2 Income derived from commercialisation by the University will be categorised as

follows:

a. Net Commercialisation Revenue (including all Royalties, fees and other benefit:

from Spin-off companies, JV companies and licensing to established

companies). Commercialisation Revenue less Commercialisation Costs

b. Distribution of Profits from a Spin-off and Joint Venture Company Profit from

business operation of a spin-off or joint venture company may be distributed

to shareholders in the form of dividends according to the Resolutions of the

Board of Directors of the company

c. Assignment or Outright sale

13.3 After deducting all the cost and expenditure on development, registration,

protection, maintenance, marketing and management of IPR including any direct

and indirect costs connected to the commercialisation or exploitation of the IPR, the

income will be distributed as follows:

Cumulative net Income Inventor University Research Institute/

per year College

On the first RM 100,000 30% 65% 5%

On the next RM 200,000 40% 55% 5%

In excess of RM 300,000 50% 45% 5%

Table 1: Distribution Rate of Intellectual Property (Net Income from Royalty)

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13.4 The Inventor(s) or Inventor's heirs, successors, and assigns will receive the
stipulated share of the net revenue for creating the Intellectual Property. The
RI/College responsible for the Intellectual Property shall receive the stipulated share
of the net revenue for supporting the related research activities. UNITEN shall
receive the stipulated share of the net revenue arising from the applicable
Intellectual Property for providing research facilities and supporting research and
technology transfer activities. UNITEN shall review the dollar thresholds set forth
above and revise them as necessary in light of inflation and other economic factors.

13.5 In the case of multiple Inventors, the cumulative net income shall be distributed
equally among them unless their initial disclosure specified an unequal distribution.

13.6 Where the Inventor is a UNITEN Staff and he/she is dismissed or his/her services are
terminated, he/she shall not be entitled to any income which has not accrued at the
date of the resignation, dismissal or termination, or any periodic payment due after
the date of the resignation, dismissal or termination, unless UNITEN in its absolute
discretion decides otherwise.

13.7 However, this provision shall not apply to a UNITEN Staff who has retired from
UNITEN or completion of employment contract, who shall continue to receive such
income or periodic payment, as may be due and payable to him. In such case, the
retired UNITEN Staff entitled to Net Proceeds arrangements must ensure that
UNITEN is notified in writing at all times of his or her current address to where Net
Proceeds due to him or her may be sent. If UNITEN is not given details of such
current address, UNITEN may designate them as ‘missing individual’ and all
unclaimed revenue payments may be invested in a deposit account until such
revenue payments are claimed subject to a maximum period of three (3) years.

13.8 The Inventor's share of the Net Proceeds shall be distributed equally amongst any
joint Inventors. However, the joint Inventors may choose to devise an appropriate
formula to share the Inventor's portion of the Net Proceeds. In such circumstances,
a 'Net Proceeds Distribution Agreement' must be signed by the joint Inventors and
this agreed distribution shall then be notified to URND in writing. No distribution of
Net Proceeds can be made until the joint inventors have reached an agreement and
such Net Proceeds Distribution Agreements are in place between the joint
inventor(s) and UNITEN regarding the Net Proceeds sharing arrangements.

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13.9 UNITEN shall distribute to the lnventor(s) the proportion of the Net Proceeds due
to them in such manner and at such times that UNITEN shall, in its sole and absolute
13.10 discretion, deem fit. UNITEN shall not be liable to pay interest for any deferred,
13.11 delayed or late payment of the proportion of the Net Proceeds due to the Inventor.
In the case of the death of an Inventor due a share of the Net Proceeds, his/her
14 share of Net Proceeds will be payable to the estate of the deceased.
14.1 Any Net Proceeds payments remaining unclaimed for three (3) years from the date
the Net Proceeds is received by UNITEN will, after that date, be forfeited and will
14.2 revert to UNITEN, and will be distributed plus any interest earned between UNITEN
and any others entitled to share in such Net Proceeds.
14.3
Dispute Resolution
In a dispute, controversy, claim or any difference arises from the execution or
operation of this Policy or in any way related to this Policy, IPCC will try to resolve
amicably the dispute, controversy, claim or difference without reference to the third
party.
In the case where the dispute, controversy, claim or difference cannot be solved,
this matter will, under the sole direction of UNITEN through the IPCC, be referred
for arbitration that will be performed by an arbitrator, which will be appointed with
the agreement of all involved parties. When it is agreed to refer the dispute,
controversy or difference to the arbitrator, IPCC will give a notice to all parties.
Where involved parties do not approve of the appointment or where one party fail
or reject or refuse to take action, other party or parties can in the period of Thirty
(30) days from the notice date apply to the Director of Regional Centre for
Arbitration Kuala Lumpur to appoint an arbitrator and that person is assumed as a
person appointed with the agreement of all parties. Arbitration will be performed
in Kuala Lumpur at the Regional Centre for Arbitration Kuala Lumpur and will be
conducted according to the Rules of Arbitration of the Regional Centre for
Arbitration Kuala Lumpur. The language that is used in the arbitration proceeding
is English Language and the result of the arbitrator and compensation, if any, is final
and binding to all parties.

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15 Moral Rights and Ethical Issues
15.1 UNITEN acknowledges the moral rights of the inventor or originator of the

Intellectual Property. UNITEN will take all necessary steps to ensure that the creator
or originator is acknowledged as the author or creator of that Intellectual Property.
The UNITEN also takes necessary steps to ensure that any changes or modifications
to the works will not give a bad impression to the reputation or honour of the
inventor or originator.
15.2 All the UNITEN Staff will ensure that during the creation, development and
production of any Intellectual Property, all reasonable actions are taken to ensure
that they do not break any ethical issues or the UNITEN’s guideline about the moral
rights of the creator or originator of the Intellectual Property, contributions, data
keeping and complications, handling research that are ethical and safe, particularly
with humans and animals, data faking and plagiarism.

16 Breach
In the event of a breach of any provision of this Policy, UNITEN reserves the right to
take any action deemed appropriate against the violator.

17 Former Staff
17.1 All Staffs are entitled to use any IP created by them in the course of their normal

duties whilst employed by UNITEN, including but not limited to further research
related activities (always subject to any contractual obligations entered by UNITEN
with any third parties e.g., licensees). However, Staffs are not automatically entitled
to use such IP created by them whilst at UNITEN after they leave their employment
with UNITEN.
17.2 UNITEN may upon request by the former Staff and at its absolute discretion grant
the former Staff license to use any IP created by them whilst at the University for
future academic and non-commercially funded research and teaching purposes.

18 Record Keeping
18.1 It is best practice for all Staff to keep full, accurate and up-to date written records

of all IP which they create in the course of their employment. Such records should
be regularly signed off by the Staff immediate superior and should be kept safe from

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unauthorised access and will be retained by UNITEN when the individual leaves the
employment of UNITEN.

19 Disclosure of Conflict of Interest
19.1 Any Inventor who holds an interest, whether directly or indirectly, in any party

interested in the commercialisation of the ensuing Intellectual Property, shall make
full and honest disclosure of the nature and extent of their interest to URND, as soon
as it is practicable and to the best of their knowledge.
19.2 Failure to declare such interest as required in Clause 14.1 above may render his/her
future claim on the Net Proceeds related to the Intellectual Property to be invalid
and void.

20 Implementation
20.1 This Policy may be implemented or supplemented in any way consistent with its

terms and those of other University policies. In the event exceptional circumstances
require any exception to the terms of this Policy, such exceptions shall require
approval of the Vice Chancellor upon IPCC’s recommendation.
20.2 This Policy shall not apply to existing written agreements between the University
and/or Creator(s) and any external organization or individual, concerning the
development, legal protection or commercialization of specific Intellectual Property
and entered into prior to the date on which this Policy is adopted by the University.

21 Amendment
21.1 The rules and guidelines set out in this Policy may be amended by UNITEN from time

to time, while preserving the rights vested prior to such amendment(s). This Policy
may also be augmented from time to time by statements of policy or practice
focused on particular types of Intellectual Property, especially those arising from
new or evolving media or technology.
21.2 URND shall undertake to notify Staff, Students and Visitors as soon as is practicable
of any amendments so made. In any case, the amendments shall be enforced and
take effect on the date the amendments are announced.

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22 Effective Date
This Policy shall take effect immediately upon its approval by UNITEN’s Board of
Directors. This Policy (the Revised Policy) shall replace the Existing Policy and shall
come into effect from the approval date.

23 Policy Management Summary

Policy Number UNITEN/PP (IP) – 02

Responsible Officer Deputy Vice Chancellor (Academic)

Implementation Officer Dean/Head of Department

Monitoring Officer Managing Director UNITEN R&D Sdn Bhd

Policy Information Contact UNITEN R&D Sdn Bhd

Date First Created/Endorsed by JPU 28 October 2003

Date of First Revision 14 July 2009

Date Second Revision Approved by JPU December 2011

Date Third Revision Approved by UNITEN BOD 27 January 2022

Effective date 1 April 2022

Contact Information

Prof. Ir. Dr. Kumaran Palanisamy, C.Eng, PJK
Managing Director
[email protected]
Tel: 03-89212020 (ext 7305)

Biruntha Mooruthi, RTTP
Chief Commercialisation Officer
[email protected]
Tel: 03-89212020 (ext 7347)

UNITEN R&D SDN BHD (839000-A)
Block BJ, Level 1, Universiti Tenaga Nasional (UNITEN) |The Energy University
Jalan IKRAM-UNITEN, 43000, Selangor, MALAYSIA
Tel: +603 8928 7347; Fax: +603 8921 2111
www.urnd.uniten.edu.my

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